Velda Bartek et al.Download PDFPatent Trials and Appeals BoardAug 8, 201914258449 - (D) (P.T.A.B. Aug. 8, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/258,449 04/22/2014 Velda Bartek RSW920130171US1-231 7702 44870 7590 08/08/2019 MOORE & VAN ALLEN, PLLC For IBM ATTN: IP DEPARTMENT 100 North Tryon Street Suite 4700 Charlotte, NC 28202 EXAMINER NILSSON, ERIC ART UNIT PAPER NUMBER 2122 NOTIFICATION DATE DELIVERY MODE 08/08/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): iplaw@mvalaw.com usptomail@mvalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VELDA BARTEK, ERIC LEONARD MASSELLE, and PATRICK GABRIEL MCGOWAN ___________ Appeal 2018-0053081 Application 14/258,449 Technology Center 2100 _________________ Before CAROLYN D. THOMAS, JAMES B. ARPIN, and PHILLIP A. BENNETT, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge ARPIN. Opinion Dissenting filed by Administrative Patent Judge THOMAS. ARPIN, Administrative Patent Judge. DECISION ON APPEAL Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 11–14, 17–19, and 21–24, all of the pending claims. 1 In this Decision, we refer to Appellants’ Appeal Brief (“App. Br.,” filed November 8, 2017) and Reply Brief (“Reply Br.,” filed April 27, 2018); the Final Office Action (“Final Act.,” mailed June 15, 2017); the Examiner’s Answer (“Ans.,” mailed March 1, 2018; and the originally-filed Specification (“Spec.,” filed April 22, 2014)). Rather than repeat the Examiner’s findings and determinations and Appellants’ contentions in their entirety, we refer to these documents. 2 Appellants assert International Business Machines (IBM) Corporation is the real party-in-interest. App. Br. 1. Appeal 2018-005308 Application 14/258,449 2 Final Act. 2. Claims 1–10, 15, 16, and 20 are cancelled. App. Br. 10–14 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ recited systems and computer program products “relate to decision making, and more particularly to a method, system and computer program product for autonomic group decision making using impedance scores.” Spec. ¶ 1. During a group decision making event or process, a group of decision makers typically desire or need to converge to a single decision option chosen from a set of options. An impedance score may be associated with each participant or decision maker in the group decision-making event. The impedance score of each participant may be based upon the behavior of the participant during the decision making process. A participant with a higher impedance score compared to others may indicate a greater resistance by the participant to convergence to the single decision option, whereas a participant with a lower impedance score may indicate behaviors by the participant that are conducive to convergence to the single decision option. Id. ¶ 17 (emphasis added). As noted above, claims 11–14, 17–19, and 21–24 are pending. Claims 11 and 18 are independent. App. Br. 10–11 (claim 11), 12–14 (claim 18) (Claims App.). Claims 12–14, 17, and 21–24 depend directly or indirectly from claim 11; and claim 19 depends directly from claim 18. Id. at 10–15. Claim 11, reproduced below with disputed limitations emphasized, is representative. Appeal 2018-005308 Application 14/258,449 3 11. A system for autonomic group decision making, comprising: a processor; a group decision making module operating on the processor, the group decision making module being configured to perform a set of functions comprising: presenting a plurality of decision options to each decision maker of a group of decision makers; receiving at least one decision option selected by each decision maker from the plurality of decision options; presenting a decision making result to each decision maker, the decision making result comprising an indication of the preference for each of the decision options by the group of decision makers; allowing each decision maker to revise the at least one decision option previously selected by the decision maker for convergence to a single decision option by the group of decision makers; determining an impedance score for each decision maker in response to at least one decision maker selecting a different at least one decision option from one previously selected, the impedance score of each decision maker being based on at least one action of a set of actions by the decision maker regarding selecting the at least one decision option, wherein a level of the impedance score indicates either a progression toward convergence to the single decision option or away from convergence to the single decision option by the decision maker associated with the impedance score; revising the impedance score for a particular decision maker each time the particular decision maker selects a revised at least one decision option; and presenting the single decision option in response to the decision makers converging on the single decision option; and Appeal 2018-005308 Application 14/258,449 4 wherein the system further comprises a selection engine, wherein the at least one decision option selected by each decision maker comprises a multiplicity of decision options selected by each decision maker, and wherein the single decision option is selected in response to expiration of a preset time period, the selection engine being configured to perform a set of functions comprising: determining a weighting associated with each decision maker based on the impedance score of each decision maker; assigning a value to each of the multiplicity of decision options based on a preference for a particular decision option by each decision maker, a highest preferred decision option being assigned a highest value and a lowest preferred decision option being assigned a lowest value; calculating a score for each of the multiplicity of decision options selected by each decision maker by multiplying the weighting associated with the decision maker by the value of each of the multiplicity of decision options selected by the decision maker; and adding the scores from each decision maker for each respective decision option of the multiplicity of decision options selected by each decision maker, wherein the decision option having the highest score is selected as the single decision option. Id. at 10–11 (emphasis added). REJECTION The Examiner rejects claims 11–14, 17–19, and 21–24 under 35 U.S.C. § 101 as directed to patent ineligible subject matter.3 Final Act. 2–4. We review the appealed rejection for error based upon the issues 3 The Examiner also provisionally rejects claims 11–14, 17–19, and 21–24 under the judicially-created doctrine of obviousness-type double patenting in Appeal 2018-005308 Application 14/258,449 5 identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). For the reasons given below, we do not sustain the Examiner’s rejection. ANALYSIS Patent Eligible Claims A. Section 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of view of the claims of a co-pending patent application. Final Act. 4–8. Because this is a provisional rejection and because Appellants indicate that they will file an appropriate terminal disclaimer to overcome this rejection, we do not address this rejection further in this decision. Reply Br. 4; see Final Act. 5; see also MPEP § 804(I)(B)(1)(b)(iv) (discussing procedure after reversal on appeal). Appeal 2018-005308 Application 14/258,449 6 intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). According to the Court, concepts determined to be abstract ideas and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Diamond v. Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook). Nevertheless, the Court noted that “[i]t is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. at 187; see also BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (Even if the individual components were known, “an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea” (emphasis added).). Appeal 2018-005308 Application 14/258,449 7 If the claim is “directed to” an abstract idea, we next “must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. Office Patent Eligibility Guidance In an effort to achieve clarity and consistency in how the Office applies the Court’s two-part test, the Office published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).4 In Step One of our analysis, we look to see whether the claims, as written, fall within one of the four statutory categories identified in § 101. Id. at 53 (“Examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the criteria discussed in MPEP 2106, i.e., whether the claim is to a statutory category (Step 1) and the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”). Under the guidance, we then look to whether the claim recites: 4 This guidance supersedes previous guidance memoranda. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 (“All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.”); see App. Br. 7–8. Appeal 2018-005308 Application 14/258,449 8 (1) Step 2A – Prong One: any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity, such as a fundamental economic practice, or mental processes); and (2) Step 2A – Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP5 § 2106.05(a)–(c), (e)–(h)). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 54–55 (“Revised Step 2A”). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept.”). C. Step One – Claims Directed to Statutory Categories Appellants’ independent claims 11 and 18, and their associated dependent claims, are directed to systems (i.e., a “machine”) and computer program products comprising a computer readable storage medium6 (i.e., a 5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are to MPEP, Rev. 08.2017, January 2018. 6 The Specification states that “[a] computer readable storage medium, as used herein, is not to be construed as being transitory signals per se . . . .” Spec. ¶ 11. Nevertheless, if prosecution resumes, Appellants should amend Appeal 2018-005308 Application 14/258,449 9 “composition of matter”), respectively. App. Br. 10–14 (Claims App.). Thus, the pending claims are directed to recognized statutory categories. Despite being directed to a different statutory category, the limitations of claim 18 closely track those of claim 11. See App. Br. 8. Claim 11 and claim 18 recite the same functions or instructions, i.e., steps, for performing the decision making process. Therefore, we focus our analysis on the limitations of claim 11. See also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) (“Although CLS Bank issued as a plurality opinion, in that case a majority of the court held that system claims that closely track method claims and are grounded by the same meaningful limitations will generally rise and fall together.”) (Citation omitted). D. Two-Part Alice/Mayo Test 1. Step 2A, Prong One – Claims Recite an Abstract Idea Applying the first part of the Alice/Mayo analysis (Step 2A), the Examiner concludes claim 11 recites the abstract idea “of determining an impedance score of a plurality of decision makers based on their decisions which indicates progression towards or away from convergence to a single decision.” Final Act. 2. Appellants do not contest that the claims recite an abstract idea. See App. Br. 5 (“Turning initially to the rejection of independent claim 11 under 35 U.S.C. §[]101, Applicant respectfully submits that independent claim 11 recites substantially more than an abstract idea and is patent eligible under 35 U.S.C. §[]101.”). Although we agree claim 18 to clarify that the computer readable storage media encompassed by this claim is “non-transitory.” See MPEP § 2106(II). Appeal 2018-005308 Application 14/258,449 10 with the Examiner that the claims recite an abstract idea, we determine that the Examiner has identified that abstract idea too narrowly. We conclude that the claims recite “group decision making.” App. Br. 10 (claim 11), 12 (claim 18); see Spec. ¶ 1. The Examiner explains, Claims 11 and 18 recite, in part, a group decision module configured to present a plurality of decision to each decision maker, receive a decision option selected by the decision maker, present a result to each decision maker indicating a preference of each option by the group, allow the decision makers to revise an option, determine an impedance score for each decision maker in response to selecting a different decision option wherein the impedance score is based on the selecting of an option by the decision maker and a level of the impedance score indicates a progression towards or away from convergence to a single decision option, revise the impedance score each time a decision option is revised, and presenting the single decision option in response to convergence to a single decision. Final Act. 3; see App. Br. 10–11 (Claims App.). The Examiner further determines that the abstract idea recited in claim 11 is similar to the abstract idea recited in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). In Electric Power, our reviewing court found that “[t]he focus of the asserted claims . . . is on collecting information, analyzing it, and displaying certain results of the collection and analysis.” 830 F.3d at 1353. Thus, the Examiner concludes that, like the abstract idea identified in Electric Power, “[r]eceiving decision results is collecting information[, d]etermining impedance of decision makers through determining weights, assigning values and calculating the scores is the analysis step based on the collected information[, and, l]astly, a Appeal 2018-005308 Application 14/258,449 11 final decision is presented to the decision makers as a result.” Ans. 10 (emphases added). Claim 11’s limitations, under their broadest reasonable interpretation, recite “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which fall within the broader category of “[c]ertain methods of organizing human activity.” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52. Thus, we are persuaded that the pending claims recite an abstract idea, namely “[c]ertain methods of organizing human activity.” See Final Act. 9 (“This is more akin to a method for organizing human activity by computerizing deliberation.”); Ans. 9 (“The claims can be considered an improvement in decision making, voting or deliberation which is merely organizing human activity and is still an abstract idea.”). 2. Step 2A, Prong Two – Abstract Idea Integrated Into Practical Application The system recites that its various steps involve operations of various functions of a group decision making module on a processor. App. Br. 10– 11 (Claims App.) The Examiner determines, The additional elements of a “processor” [(claim 11)] and “computer readable storage medium” [(claim 18)] are recited at a high level of generality and perform generic computer functions. The use of generic computer components to receive the decisions and determine an impedance score does not impose any meaningful limit on the computer implementation of the abstract idea. The claims could be performed without the use of computers and purely through human actions. Appeal 2018-005308 Application 14/258,449 12 Final Act. 3 (emphasis added).7 For the reasons given below, even if the Examiner is correct, this is not dispositive here. To determine whether claim 11 integrates the abstract idea into a practical application, we consider the additional elements recited in claim 11, i.e., those components, features, limitations, or steps that the claim recites beyond the abstract idea itself. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.24. In claim 11, the additional components are a “processor” and “a group decision making module” and a “selection engine” operating on the processor. App. Br. 10–11 (Claims App.). These additional components, considered individually and in the context of claim 11 as a whole, do not integrate the abstract idea into a practical application. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 nn.25 & 27–32 (citing MPEP § 2106.05(a)– (c), (e)–(h)). Considered individually, these additional elements are merely generic computer components and techniques. See Spec. ¶¶ 13 (known software transferring information via known networks), 15 (“a processor of a general purpose computer”), 55 (known interfaces), 56 (known computer components). As such, these additional elements merely add generic computer activity to the collecting, analysis, and presentation of information between decision makers, which is insufficient to integrate the judicial exception into a practical application. See MPEP § 2106.05(a). Thus, the 7 We acknowledge that some of the considerations at Step 2A, Prong Two, properly may be evaluated under Step 2 of Alice (Step 2B of the Office guidance). For purposes of maintaining consistent treatment within the Office, we evaluate those considerations under the first part of the Alice/Mayo analysis (Step 2A of the Office guidance). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32. Appeal 2018-005308 Application 14/258,449 13 Examiner concludes “[t]he combination of the abstract elements and the generically stated technical elements merely using the computer as a tool do not amount to significantly more than the abstract idea.” Ans. 10–11. Appellants contend, however, that claim 11 recites a technological improvement. App. Br. 6–7. In particular, The technological improvement provided by the present invention as recited in the claims is for autonomic group decision making by providing computer performance of a function that was unable to be performed by a group of decision makers, namely, selecting a single decision option from a plurality of decision options by computer-implementation of a set of rules after the group of decision makers were unable to converge on a single decision option after expiration of the preset time period. The autonomic group decision making is performed after any human activity has failed to converge on a solution and is performed without further human activity. Reply Br. 3 (emphases added). As claim 11 recites, “the single decision option is selected in response to expiration of a preset time period.” See App. Br. 10–11 (Claims App.). Thus, the recited decision making process makes a selection once the decision makers fail to achieve complete convergence within a preset time period. Thus, we are persuaded that “the present invention as recited in the claims cannot be performed purely through human actions and without the use of computers” applying a set of rules. Reply Br. 3; see Ans. 9–10. In McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016), our reviewing court found that “the claimed improvement . . . is allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” The human animators, however, used subjective determination, rather than specific Appeal 2018-005308 Application 14/258,449 14 limited mathematical rules, to accomplish animation. Id. at 1314. As in McRO, Appellants contend that the present invention as recited in claim 11 describes a specific way (using computer-implemented rules or conditions to determine a weighting associated with each decision maker; assigning a value to each of the multiplicity of decision options; calculating a score for each of the multiplicity of decision options; and determining the single decision option from the scores) to solve the problem of selecting a single decision from a plurality of decision options when a group of decision makers are unable to do so after expiration of a preset time period. App. Br. 6–7 (emphasis added). Decision makers are not known to make group decisions based upon weightings derived from impedance scores, which weightings are applied to decision option values, and, ultimately, upon the summation of the weighted option values for the various decision makers. See Final Act. 8 (novelty and obviousness rejections have been withdrawn); see also McRO, 837 F.3d at 1314–15 (“The prior art ‘animator would decide what the animated face should look like at key points in time between the start and end times, and then “draw” the face at those times.’ The computer here is employed to perform a distinct process to automate a task previously performed by humans. . . . It is the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks. This is unlike Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way.” (citations omitted)). As our reviewing court concluded in McRO, the automation goes beyond merely “organizing [existing] information into a new form” or carrying out a fundamental economic practice. The claimed process uses a combined order Appeal 2018-005308 Application 14/258,449 15 of specific rules that renders information into a specific format that is then used and applied to create desired results . . . . While the result may not be tangible, there is nothing that requires a method “be tied to a machine or transform an article” to be patentable. McRO, 837 F.3d at 1315 (citations omitted). The same is true here. Although claim 11 recites no particular hardware to accomplish the recited functions, and the Specification only describes generic hardware for this purpose (see Spec. ¶¶ 13, 15, 55, 56, 59), we are persuaded that the claim recites other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. MPEP § 2106.05(h). In view of Appellants’ claims and Specification, and for reasons similar to those set forth in McRO, we conclude that the pending claims integrate the judicial exception into a practical application and that the claims are not directed to an abstract idea. 3. Step 2B –Significantly More than the Abstract Idea Because we determine that, although the claims recite an abstract idea, they integrate that abstract idea into a practical application; we do not reach whether the claims include additional limitations, such that the claims amount to significantly more than the abstract idea. E. Lack of Preemption Appellants also contend, “the specific features of independent claims 11 and 18 and the other claims of the present application do not preempt any and all ways of autonomic group decision making.” Reply Br. 3 (citation omitted). “[Q]uestions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Nevertheless, like McRO, the Appeal 2018-005308 Application 14/258,449 16 limitations in claim 11 here prevent preemption of all processes for achieving autonomic group decision making. Appellants demonstrate that their autonomic group decision making steps provide an alternative process for group decision making. E.g., Spec. ¶ 33 (“If the group of decision makers have not converged to the single decision option, the method 100 may return to block 110 and the method 100 may continue similar to that previously described. If the group of decision makers have converged to the single decision option in block 116, the method 100 may advance to block 118.”); see McRO, 837 F.3d at 1315 (“There has been no showing that any rules-based lip-synchronization process must use rules with the specifically claimed characteristics.”). As in McRO, the pending claims use specific and limited rules in a process specifically designed to achieve an improved technological result when a conventional decision making process fails to achieve convergence in a preset time period. Id. at 1316. On this record, we agree with Appellants that independent claim 11, as well as independent claim 18, is not directed to an abstract idea. Thus, we are persuaded that the Examiner erred in determining that these claims are patent ineligible, and we do not sustain the rejection of these independent claims, or the pending claims dependent therefrom. CONCLUSIONS 1. The Examiner erred in rejecting claims 11–14, 17–19, and 21–24 under 35 U.S.C. § 101, as directed to patent-ineligible subject matter. 2. Thus, claims 11–14, 17–19, and 21–24 are not unpatentable. Appeal 2018-005308 Application 14/258,449 17 DECISION We reverse the Examiner’s rejection of claims 11–14, 17–19, and 21– 24. REVERSED Appeal 2018-005308 Application 14/258,449 18 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VELDA BARTEK, ERIC LEONARD MASSELLE, and PATRICK GABRIEL MCGOWAN ___________ Appeal 2018-005308 Application 14/258,449 Technology Center 2100 _________________ Before CAROLYN D. THOMAS, JAMES B. ARPIN, and PHILLIP A. BENNETT, Administrative Patent Judges. THOMAS, Administrative Patent Judge, Dissenting. DISSENTING OPINION I respectfully dissent from the Majority’s decision to reverse the Examiner’s rejection of claims 11–14, 17–19, and 21–24 under 35 U.S.C. § 101. Specifically, I disagree with the Majority’s view that independent claim 11 is patent eligible under Step 2A, Prong Two of Alice and the Revised Guidance framework. Before addressing Step 2A, Prong 2, I first acknowledge that I agree with the majority that claim 11 recites “group decision making,” which we conclude is certain methods of organizing human activity (Decision 11). However, I would add that for at least the following reasons, I believe representative claim 11 recites plural abstract ideas, i.e., also recites mental Appeal 2018-005308 Application 14/258,449 19 processes. For example, claim 11 recites at least the following limitations: (1) “presenting a plurality of decision options to each decision maker,” (2) “receiving at least one decision option selected by each decision maker,” (3) “presenting a decision making result,” (4) “allowing each decision maker to revise . . . option previously selected,” (5) “determining an impedance score for each decision maker,” (6) “revising the impedance score,” and (7) “presenting the single decision option.” These limitations, under their broadest reasonable interpretation, recite mental processes that people can perform using their minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). This is true even if the claim recites that a generic computer component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); see also 2019 Eligibility Guidance 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”). I believe each of the aforementioned limitations can practically be performed in the mind or using pen and paper. Thus, I disagree with the Appeal 2018-005308 Application 14/258,449 20 majority that “‘the present invention as recited in the claims cannot be performed purely through human actions and without the use of computers’ applying a set of rules” (Decision 13). For example, people can perform the “presenting” and “receiving” steps by simply passing a piece of paper, with the options noted thereon, to all decision makers, selecting one such option via pen, visually observing the results after all have made a selection, and passing a piece of paper around showing the single or various results selected. People can perform the “allowing” step by simply letting a person change their mind and select another option. People can perform the “determining” and “revising” steps by using pen and paper to assign a score to an individual based on observing their behaviors regarding willingness to change their minds, and revising the score each time the decision maker further changes his/her mind. Claim 11 further recites at least the following limitations: (a) “wherein the single decision option is selected in response to expiration of a preset time period,” (b) “determining a weighting associated with each decision maker,” (c) “assigning a value to each of the multiplicity of decision options,” (d) “calculating a score,” and (e) “adding the scores.” Again, I believe these limitations, under their broadest reasonable interpretation, recite mental processes that people can practically perform using their minds or pen and paper. For example, people can perform the selecting in response to expiration of a preset time period by simply waiting for that time period to past, either by counting or observing a clock, before noting a selection. People can perform the “determining a weighting” and “assigning a value” steps by simply using pen and paper to rank preferences/opinions from high to low and giving a higher value to options Appeal 2018-005308 Application 14/258,449 21 of greater interests. Finally, people can perform the “calculating” and “adding” steps by simply multiplying the weights associated with the decision maker by the value and then adding the scores (i.e., non- complicated mathematical functions), and observing the option with the highest score and selecting that as the single decision option. As illustrated in Appellants’ Specification: During a group decision making event or process, a group of decision makers typically desire or need to converge to a single decision option chosen from a set of options. An impedance score may be associated with each participant or decision maker in the group decision-making event. The impedance score of each participant may be based upon the behavior of the participant during the decision making process. A participant with a higher impedance score compared to others may indicate a greater resistance by the participant to convergence to the single decision option, whereas a participant with a lower impedance score may indicate behaviors by the participant that are conducive to convergence to the single decision option. Behaviors conducive to convergence may include, but are not necessarily limited to actions such as specifying a larger number of preferred options, foregoing the option to rank preferred selections, quicker modification of preferred selections to accommodate the choices of others or earlier acceptance or selection during the decision making process of the decision option preferred by most other participants or decision makers, and any other actions that may reduce the time for convergence to the single decision option by all or at least most participants. Spec. ¶ 17. Furthermore, Appellants’ Specification describes how the various calculations can be performed (see Spec. ¶¶ 20–24), all of which I believe can practically be performed in the mind or using pen and paper, but for the recitation in the claims of generic computer components. Appeal 2018-005308 Application 14/258,449 22 Therefore, for at least the aforementioned reasons, I agree with the majority that claim 11 recites an abstract idea, which I conclude is both certain methods of organizing human activity and additionally mental processes. Step 2A—Prong 2 (Integration into Practical Application) 8 Under the Revised Guidance, I now must determine if additional elements in the claims integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). I discern no additional element (or combination of elements) recited in Appellants’ representative claim 11 that integrates the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong 2”). Although I agree with the majority that Appellants’ claimed additional elements (e.g., “a processor,” “a group decision making module,” and “a selection engine”) do not integrate the abstract idea into a practical application (see Decision 12), I disagree with the majority that the claimed invention is nonetheless patent eligible because of being similar to the claims in McRO (see Decision 13–15). I believe Appellants’ claimed additional elements do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not 8 We acknowledge that some of the considerations at Step 2A, Prong 2, properly may be evaluated under Step 2 of Alice (Step 2B of the Office revised guidance). For purposes of maintaining consistent treatment within the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 nn.25, 27–32. Appeal 2018-005308 Application 14/258,449 23 applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a)–(c), (e)–(h). Appellants contend that “[s]imilar to setting morph weights and transition parameters, rather than using human artists, in McRO, the present invention, as recited in claim 11, also removes the human aspect and applies the computer-implemented rules” (App. Br. 6) “a specific way . . . to solve the problem of selecting a single decision” (id. at 6–7). I find Appellants’ arguments unpersuasive. That is, here the arguably innovative technique of the appealed claims is inextricably a part of the abstract idea of “group decision making.” Moreover, I believe nothing in the claims, understood in light of the Specification, requires anything other than an off-the-shelf conventional computer used for collecting and processing/analyzing various information/data. Therefore, it is my view that the claims are directed not to an improvement in computer capabilities or other technology, but to the results of applying an abstract idea. The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. I, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea, and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Here, I believe the claims are merely directed to a result or effect that itself is the abstract idea. Appeal 2018-005308 Application 14/258,449 24 Furthermore, as highlighted by the majority, the Specification merely describes generic computer components performing generic computer functions that are routine and conventional, and are performing the normal, basic functions of a computer (see Decision 12). See Electric Power, 830 F.3d at 1355 (“Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”). In SiRF, the court explained that: In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. SiRF Tech., Inc. v. Int'l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1277–78 (Fed. Cir. 2012). Here, I believe the introduction of the additional elements are merely to achieve convergence to a single decision option more quickly, i.e., after expiration of a preset time period, instead of waiting for the decision makers (i.e., “The process may continue in this inefficient manner until a consensus or solution is reached.” Spec. ¶ 2.), as opposed to being a significant part in permitting the claimed method to be performed. Additionally, the majority suggests that the withdrawal of the novelty and obviousness rejections shows that “Decision makers are not known to make group decisions” as claimed (see Decision 14). Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, Appeal 2018-005308 Application 14/258,449 25 but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 217– 18 (quoting Mayo, 566 U.S. at 73). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). I point out that a novel and nonobvious claim directed to a purely-abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 89–91. The dispositive issue is not whether claim 11 is patentable over the prior art, but whether claim 11 is directed to patent-eligible subject matter that improves the existing technological process, as in McRO. As for the majority’s reliance on McRO, I first note that the additional elements that the majority rely upon (e.g., wherein the single decision option is selected in response to expiration of a preset time period), are not in fact additional elements, but rather a part of the abstract idea itself. As stated by the Supreme Court in Alice, Mayo made clear that transformation into a patent-eligible application requires “more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.”’ Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72). I believe the relevant question here is whether claim 11 does more than simply instruct a processor to implement the abstract idea by using conventional calculations (i.e., ranks, scores, weights, multiplication, and addition) to select an option. I believe, when considered as a whole, claim 11 recites a generic computer to perform the abstract concept of using scores, values, and calculations to perform group decision making. Therefore, the recitations of claim 11 do not add significantly more to Appeal 2018-005308 Application 14/258,449 26 transform the abstract idea into patent-eligible subject matter and, because claim 11 simply uses a generic computer to implement an abstract idea, claim 11 does not improve the existing technology in the way McRO’s rules with specific characteristics that transform the abstract idea of McRO. In other words, the rules in McRO allowed the computer to solve a technological problem by producing accurate and realistic synchronization in animated characters that could only previously be produced by humans. In contrast with McRO, it is my position that Appellants do not identify any specific rules in the claim that are used by the claimed processor to solve a technological problem, let alone identify specific rules that act in the same way as the specific rules enabling the computer in McRO to generate computer animated characters. Rather than solving a technological problem, Appellants’ claim seeks to solve a “timing” issue, i.e., how to more quickly reach convergence in a decision making process between two or more people. I, therefore, find insufficient evidence of record to support the argument that Appellants’ claim 11 is similar to the claim in McRO, where computers were unable to make certain subjective determinations, i.e., regarding morph weight and phoneme timings, which could only be made prior to the McRO invention by human animators. Rather than paralleling the claims in McRO, I agree with the Examiner (see Ans. 10) that claim 11 is substantially similar to the claims that the Federal Circuit determined were patent-ineligible in Electric Power Group, 830 F.3d at 1350. In Electric Power, the court found that the claims were directed to an abstract idea because “[t]he advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology Appeal 2018-005308 Application 14/258,449 27 for performing those functions.” Electric Power, 830 F.3d at 1354; see also id. at 1353–54 (characterizing collecting information, analyzing information by steps people go through in their minds, or by mathematical algorithms, and presenting the results of collecting and analyzing information, without more, as matters within the realm of abstract ideas). Citing Electric Power in FairWarning, the Federal Circuit held that the claims were directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected, i.e., to a combination of abstract idea categories, FairWarning and that, as in Electric Power, “the focus of the claims is not on . . . an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (alteration in original) (citation omitted). For at least the reason noted supra, I determine that claim 11 (1) recites a judicial exception and (2) does not integrate that exception into a practical application. Thus, I believe representative claim 11 is directed to the aforementioned abstract idea. Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Turning to the second step of the Alice inquiry, I now must look to whether claim 11 contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 216. As recognized by the Revised Guidance, an “inventive concept” under Alice step 2 can be evaluated based on whether an additional element or combination of elements: (1) “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the Appeal 2018-005308 Application 14/258,449 28 field, which is indicative that an inventive concept may be present”; or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d). I find no element or combination of elements recited in Appellants’ claim 11 that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. Appellants have not adequately explained how claim 11 is performed, such that it is not a routine and conventional function of a generic computer. Because I believe Appellants’ independent claim 11 is directed to a patent-ineligible abstract concept, does not include additional elements that integrate the judicial exception into a practical application, and does not add a specific limitation beyond the judicial exception that is not “well- understood, routine, and conventional,” I would sustain the Examiner’s rejection of the claims under 35 U.S.C. § 101 as being directed to non- statutory subject matter in light of Alice, its’ progeny, and the Revised Guidance. I, therefore, respectfully dissent from the Majority Decision reversing the rejection of claims 11–14, 17–19, and 21–24 under 35 U.S.C. § 101. Copy with citationCopy as parenthetical citation